WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AUDI AG v. vitty Inc
Case No. DBIZ2002-00027
1. The Parties
Complainant is AUDI Aktiengesellschaft, Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Berlin, Germany.
Respondent is according to the Whois database vitty Inc, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The domain name at issue is <audi.biz>. The registrar is 007 Names, Inc., Bridgewater, NJ, United States of America.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
The Complaint was received electronically by the WIPO Arbitration and Mediation Center ("the Center") on April 24, 2002. Due to apparent logistical problems the hardcopies followed only on May 16, 2002, and the Complaint was resubmitted electronically on May 23, 2002. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant.
The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding on May 24, 2002, to the Respondent in the prescribed manner, setting a deadline of June 13, 2002, by which the Respondent could file a Response. The Notification was also sent to the Complainantís representative. The Center also sent a copy of the Complaint (without attachments) to ICANN and the Registrar.
The Respondent failed to file a Response in the time allowed and has not filed a Response to date as far as the Panel is aware.
A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative on June 26, 2002.
The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center and on July 10, 2002, the Center notified the parties of the appointment of the Panel and at the same time forwarded the case file to the Panel.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
All other procedural requirements appear to have been satisfied.
4. Factual Background
The Complainant is one of the worldís large car-manufacturers. Cars of the Complainant are sold worldwide. The Complainantís Group turnover worldwide was EUR
22,000,000,000.00, the EBIT more than EUR 1,300,000,000.00. The Complainantís group employs approximately 51.000 employees. Complainant is among other places producing cars of the Type A6 in China and delivered approx. 37,500 cars in China and Japan in 2001.
This Complaint is based on a number of national and international trademarks of the Complainant. A list of the trademarks "Audi" held by the Complainant was enclosed as Annex 3.
The Complainantís trade mark "AUDI" was registered under Taiwanese trademark law on October 1, 1999. The Complainant is also the owner of internationally protected trademarks AUDI (in Asian Letters), No. 737443, registered for classes 3, 4, 7, 9, 12, 14, 16, 18, 25, 28, 30, 31, 32, 33, 35, 36, 37, and 42 and the trademark AUDI, registered for classes 2, 7, 8, 9 12, 14, 16, 18, 20, 21, 25, 26, 27, 28, 37.
5. Partiesí Contentions
The following is taken from the Complaint and is not contested by the Respondent.
1. With the exception of the generic Top Level Domain "biz" the domain name <audi.biz> is identical to the trademark AUDI in which the Complainant has rights. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277.
2. The Respondent should be considered as having no rights or legitimate interests in respect of the domain name AUDI.BIZ because:
- there is no relationship between the Complainant and the Respondent and the Respondent is not a licensee of the Complainant and no otherwise permission or consent has been granted to the Respondent to use the AUDI mark or to apply for any domain name incorporating this mark (see Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277, Parfums Christian Dior bv. QTR Corporation, WIPO Case No. D2000-0023).
- the Respondent is not commonly known by the domain name <audi.biz>, especially its company name does not include the string AUDI:
- the Respondent does not hold an international trademark "AUDI" under MMA or PMMA. Research in WIPO Madrid Express Database returns 19 matches on "AUDI" as trademark combined with "Audi" as holder. The combined research for "Vitty" as holder of the trademark "AUDI" returns 0 hits;
- the Respondent did not use or prepare to use the domain name <audi.biz> or a name corresponding to the domain name in connection with bona fide offering of goods, because according to the rules of the registration procedure Respondent has been informed of the IP claim of the Complainant during registration and confirmed his application for registration of the domain name despite this IP Claim. Therefore, its registration of the domain name necessarily includes an infringement of the Complainantís rights.
3. The domain name should be considered as having been registered in bad faith because:
- the domain name indicates no reference to the Respondent;
- the Complainantís trademark AUDI is being highly promoted worldwide and therefore well known to public and thus the Respondent had kowledge of the trade name of the Complainant, both in fact and as a matter of law (see Finter Bank Zürich v. Gianluca Olivieri, WIPO Case No. D2000-0091);
- the registration despite the IP Claim and the famous trademark of the Complainant indicate that the Respondent primarily registered the domain for the purposes of selling, renting, or otherwise transferring the name registration to the Complainant or a competitor of him. The Respondent will not be able to use the domain without infringing the trademark rights of the Complainant. This fact also indicates that the registration was made in order to prevent the Complainant from reflecting his mark in a corresponding domain name;
- since the trademark "AUDI" is world famous and commonly known for the products of the Complainant, consumers and business partners of the Complainant are expecting to find Information of the Complainant under domain names consisting of the trademark of the Complainant as Second Level Domain and any generic or cc-TLD. Many internet users find internet pages of world famous companies by typing names or trademarks directly into their Web browser. By using the domain name <audi.biz> the Respondent misleads those users and thus attracts far more Internet Users to his website than he would ever be able to do under his company name vitty Inc. or his trademarks Ė if he owns any at all. This indicates that the Respondent Ė if he will not try to sell the name Ė intentionally attempts to attract, for commercial gain, internet users to his web site by creating likelihood of confusion with the Complainantís mark.
All these facts seem to point to the suspicion, that the Respondent could be a cybersquatter (see Singapore Airlines Ltd. v. European Travel Network, WIPO Case No. D2000-0641 "Ö(the domain names) are so obviously connected with a well-known airline that their very use by someone with no connection with the airline suggests opportunistic bad faith. Indeedit is hard to imagine a more blatant exercise in "cybersquatting"", same argumentation in Lufthansa AG v. Jin Wang Huh, WIPO Case No. D2001-1226)
As mentioned above under 3, the Respondent has not filed a response in accordance with the Rules, Paragraph 5 and regrettably no other information on or by the Respondent has been presented to the Panel.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the STOP directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and
3) the domain name has been registered or is being used in bad faith.
1. AUDI is registered and used as trademark by Complainant in a number of countries around the world including in the country of residence of Respondent, Taiwan.
The domain name <audi.biz> is identical to the trademark AUDI except for the addition ".biz".
The prerequisites in the STOP, Paragraph 4(a)(i) are therefore fulfilled
2. The Complainant has neither explicitly nor tacitly licensed nor otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Respondent has not demonstrated that he has any prior rights or other independent, legitimate interests in the domain name.
Further, the name AUDI is to the best of the Panelís knowledge not a generic word or a commonly used word in Taiwan.
The prerequisites in the STOP, Paragraph 4(a)(ii), cf. 4(c) are therefore fulfilled.
3. Paragraph 4(a)(iii) of the STOP further provides registration or use in bad faith.
Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
The mark was protected and used in the country of residence of the Respondent at the time of registration of the domain name. In addition the AUDI mark must be considered to be a well-known mark. Under these circumstances and given the fact that AUDI has no commonly known meaning, the Panel finds that Respondent must have had knowledge of Complainant's rights to the mark AUDI when he registered the contested domain name.
Further, the registration of the domain name will have the effect that Complainant is prevented from reflecting their mark in the corresponding .biz gTLD just as any use of the mark will inevitably be likely to disrupt the business of Complainant.
Paragraph 4(a)(iii) cf. Paragraph 4(b) is thus fulfilled.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) of the STOP are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to the tradema
rk in which the Complainant has rights, and that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, and that the domain name has been registered or is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the STOP, the Panel requires that the registration of the domain name <audi.biz> be transferred to the Complainant.
Dated: July 12, 2002